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As you are likely already aware, Minecraft-makers Mojang are currently embroiled in the first stage of legal proceedings brought about by The Elder Scrolls-makers Bethesda, in a dispute over whether the name “Scrolls” can be used for the title of the second game. Keen to find out a little more about what it all means, I had a chat with Alex Chapman, an intellectual property lawyer at Sheridans Solicitors in London, who is advising Mojang on the case. Read on below for some elucidation into what’s going on, and what to watch out for when you are naming your own game.

RPS: What’s really at stake here and why are Bethesda pursuing this action?

Chapman: I can’t say why Bethesda is pursuing this action except that it would appear that it is trying to use its rights in the name “The Elder Scrolls” to have an effective monopoly over the use of the word “Scrolls” as / in the title of video games. For Mojang, what is at stake is the right to use the name “SCROLLS” as the title of its new game.

The question here is whether the relevant consumers are or are likely to be confused into thinking that Mojang’s “Scrolls” game is connected with Zenimax’s “The Elder Scrolls” series. In determining the answer the judge will have to take account of a number of factors including the overall impression of the marks and the relative significance of the component words, as well as the level of sophistication of the applicable consumers and the channels through which the applicable products may be sold or marketed. In simple terms would consumers buy one thinking it was connected to the other? We think not, given the sophistication of consumers of each game type, the types of game and the respective channels of marketing and distribution, amongst other things.

RPS: If Bethesda win, what will that mean?

Chapman: In all likelihood Mojang will have to change the name. At least temporarily whilst we wait for a full trial of the issues.

At the moment the case is at its first stage. At this stage the Swedish court is deciding whether to grant an “Interim Injunction”. An interim injunction in Sweden is decided on the merits of the case only to the extent that the plaintiff has to show “probable grounds” for trade mark infringement and it is reasonably expected that the continued use of the mark diminishes the value of the exclusive right to the trade mark. That means that the the burden of proof on Bethesda is lower than with a full and final assessment of the case. So it will be easier for Bethesda to get what it wants at this stage as it won’t have to provide full evidence just “probable grounds” i.e that they may have an arguable case – of course we don’t think they do but if the court doesn’t agree Mojang will probably have to change the name until the court makes a full and final assessment of the case – by which time the game should have already released.

RPS: If Mojang win, what will that mean?

Chapman: The case could still go to full trial but Mojang would not have to change the name in the meantime.

RPS: Anecdotally, at least, gamers seem to think it’s preposterous that these kinds of actions over individual words take place, but aren’t they actually fairly common?

Chapman: They are not uncommon but people are certainly becoming more aware of them. Each case turns on its facts. Some of the claims are valid – where it is apparent that one company is free riding off the goodwill of another. Others, like this one, seem more difficult to justify. It also depends on the word that is being used and the context. One of the things that concerns gamers in this case is that most of them are familiar with scrolls being so commonplace in fantasy games. They are to fantasy games what guns are to FPS games or cars are to driving games. They are a core element of the game and so it seems wrong that someone should be able to assert a monopoly over the word.

RPS: What should devs think about when naming their games? Do they need to be extra careful in light of this case?

Chapman: This case doesn’t change the law but it highlights that indies and anyone else releasing games or other products and services must think carefully about it. One of the things that is most concerning about this case is that “Scrolls” should have been a safe title. The biggest concern with it was really whether it was something that Mojang could protect and whether the trade marks registry would accept it because it may be considered devoid of distinctive character and therefore incapable of registration. We still have our concerns on that and I understand from guys at Mojang that they have no intention of preventing others using the word “scrolls” in connection with games and other things – so long as it is not in a way that “rips off” Mojang. As we has seen historically with words like “Dungeons”, “Dragons”, “Magic”, “War” etc. co-existence is common and the use of those words and others do not create any confusion in the minds of consumers.

I think people can understand that when a company uses say “Apple” for computers then that should give it a right to an effective monopoly especially when it is putting money in to building the brand. However if it was to stop someone using “Apple” in the name of product dealing with fruit then there would be an issue. The same applies here.

There are also examples of games that are named after their subject matter and those games being uniquely identified by or associated with that name, such as “Worms”, “Football Manager” and “Driver”. However in those cases the brand owner has generated so much goodwill through their use of the name for those games that the consumers instantly recognise the as being the game. So when you say “Worms”, “Football Manager” and “Driver” for games everyone knows the game you are talking about.

This is known as distinctiveness through use. The difference here is that Bethesda have never used the word “Scrolls” on its own in a trade mark sense but only in with “The Elder Scrolls” – and even then generally with a further brand such as “Skyrim” or “Oblivion”.

So we don’t think they have any claim to distinctiveness through use that may enhance their position.

Essentially our position is that when someone sees the word “Scrolls” they don’t think of “The Elder Scrolls”.

@Sheng-ji. Oh, I’m aware of that. I’d just like to know if the plan was to attempt that sort of balance. Also, I see the article has now been amended to clarify this guy is working for Mojang. Initally, all it said was that Alex was “advising on the case”

Um, you go to court when someone decides to press the case. Their case can be completely frivolous, you’re still gonna have to have the first injunction hearing before it’s thrown out.

It’s not really biased either. I mean the guy is clearly saying in each and every answer what he believes the possible angles are and why he thinks these do not apply here. He clearly separates opinion from fact, what more do you want?

Shocking lack of balance if we don’t hear Bethesda’s side of this argument. All I read here was a bunch of opinion presented as facts, or ya know what lawyers do. If there was a cut and dried case they wouldn’t need to go to court.

Knee-jerk lawyer suspicion much? Having actually read the article, I know that Chapman is discussing Mojang’s side of the case, not “a bunch of opinion presented as facts”. He never implies that the case is “cut and dried”; his language implies just the opposite: “Essentially our position is that when someone sees the word ‘Scrolls’ they don’t think of ‘The Elder Scrolls’.”

Does anyone actually believe this bit of Mojang spin? This lawsuit isn’t even about the trademark app, that would be dealt with separately with the USPTO or other trademark offices. This statement is akin to saying, “Hey, we’ll drop this application over here (that has virtually no chance of being approved anyway for all kinds of reasons) in exchance for you dropping your lawsuit that may actually have some merit. Sound good?”.

Who would actually accept that?

Of course this was rejected because Zenimax must defend their trademark or risk losing it. This is just a part of trademark law. If the courts find that Scrolls does not infringe on The Elder Scrolls, then there is legal precedent that prevents some third party from petitioning to cancel the trademark and both sides are happy.

This is pretty straightforward stuff people. This isn’t David vs. Goliath. It’s not big huge evil corp against little indie dudes. Little indie dudes don’t have $30m in the bank.

@ Eschwen – Sure, indie dudes may not have that kind of money usually, whereas Mojang (Mostly notch in himself though) does. Soooo… ;)
And really, if they come through and get Scrolls trademarked, they better not be like the douchebag with “Edge”…
(Also; When I hear the word “Scrolls” I do instantly think of Elder Scrolls. ;o)

From what I understand, this is about Bethesda defending their trademark “The Elder Scrolls” just because they’re obliged to. If they don’t act on any possible infringement they may lose the trademark.

Couldn’t Bethesda just explicitly permit them to use the name though? There was a situation like that with a Second Life satire site called “Get a first life” (now defunct) which used something resembling the Second Life logo very closely. IIRC, they got an explicit permission to use this logo after the fact, which apparently was enough to protect the rights to it since they did act on the infringement.

So, what are the differences here? Or do the lawyers just push for legal action to secure their jobs?

If I remember rightly, Mojang have already trademarked (or at least applied to trademark?) the name “Scrolls” for their game.
My understanding is that even if Bethesda allowed them use of the title, Mojang wouldn’t necessarily be allowed to trademark the title.

For instance if Bethesda made a deal with a second company to allow them to publish a game named “The Eldest Scrolls” that wouldn’t grant the second company the right to trademark the name.

I think you’d be genuinely shocked how many times a year computer game companies take legal action with each other. It’s only because Mojang have decided to go public with this that we all know about it – that’s Notches style. Don’t doubt that if you created a roleplaying game and named it Mine Raid, Mojang would haul you in front of the courts and try to make you rename it. He wouldn’t be public about that either!

in this case, notch is a fucking moron.
Maybe that offends some people, but trademark law is very strict. And he is trademarking “Scrolls” in a 300 page list of uses. Do you know what similar trademarks are? ONE SENTENCE. maybe two.

This means that ANYONE using the word “Scrolls” in any media, tshirts, cups, carpets, books, would run foul of this, even if its only part of the name.. if this was allowed to pass as a valid trademark, it would render “The Elder Scrolls” invalid.
It should be noted, bethesda only trademarked the elder scrolls as a video game, not t-shirts, mugs, umbrellas, chihuahuas and kitchen sinks.

Now bethesda is following through with this in its suit even though notch supposedly is willing to back off… but this is the kinda thing you HAVE to do. IF you do not defend your trademark, you lose it, and notch using this tactic is disgusting, it needs to be shot down.

mind you, I like minecraft and play it frequently… but this is stupid.

@Nesetalis: If that is the case (link?), does this trademark application have any chance of going through anyway? IANAL, but common sense tells me that “Scrolls” is far too common a word to trademark in such a broad way.

i reply failed at the top.. but i was misremembering, it was 300 word, not 300 pages.. :p bit more reasonable..
kotaku wrote: link to kotaku.com
“Mojang’s “scrolls” application is similarly scattershot, attempting to cover TV shows, radio programs, movies, education materials, clothing of all kinds, videogame consoles, toys, playing cards, puzzles, stand-alone game cabinets in addition to the videogame. The application encompasses four separate trademarks over the course of its weighty 300 words. Zenimax’s “Elder Scrolls” patent application, by contrast, is a single sentence: “Pre-recorded CD’s and DVD’s featuring fantasy games.””

Well that’s a bullshit trademark if I’ve ever seen one. It even sounds like it might have been drafted half-sarcastically … bloody hell, the parts about distinctiveness of “Elder Scrolls” and the precedent for co-existence of words like “scrolls” in video game marks, as well as the broad associations of scrolls and fantasy games in fantasy games all makes sense to me. Heck, there’s a game called Dungeons. But that trademark does not help my opinion of the Mojang’s position nor does it seem consistent with any of the logic that would otherwise make this case an easy win for Mojang.

For fuck’s sake, STOP spreading misinformation. Notch has already stated multiple times on his blog and on Twitter that they applied for the Minecraft trademark, and while they were at it also applied for Scrolls. They offered to drop the Scolls trademark application as soon as Bethesda sent them a letter:link to notch.tumblr.com

Now all that Mojang wants to do is to name their game Scrolls, they’re not asking for a trademark, and Bethseda are still suing. At this point what Bethesda are trying to impose through the court is that because they trademarked “The Elder Scrolls”, nobody has the right to use the word Scrolls in their game’s title.

So, so wrong. So completely wrong. So utterly, utterly wrong that your general wrongitude can be scientifically observed. From space.

See, I’m not one to normally defend Notch out of hand, but when I’ve seen evidence of something, actual, factual evidence, then I’m more than happy to point out when a person is wrong. And you are indeed wrong. Okay, I’ve had my fun, I’ll now tell you why you’re wrong.

There’s a clone of Minecraft on the Android store named Minebuilder. It’s not free, it’s being sold. Notch knows about it, and thus far, he doesn’t care. If he were as bothered by these things as you’d seem to imply, then he certainly would have had some legal people send a cease & desist to this fella, or he would have had Google pull it off the store.

I mean, the guy even has minecraftbuilder.org registered and everything.

If Notch was going to flip a shit at this sort of thing, then he already would have flipped a shit at this particular instance of Minecraft rip offery. And lo, wrong.

— EDIT —

In fact, to just further illuminate the excessive levels of wrongitude here, I’ll also note that Notch recently said in a recent tweet, that was recent, that he wants Minecraft clones. That he’d welcome the competition.

If he says something like that, he tends to stick by it, and the continued co-existence of Minebuilder and Minecraft on the Android Market proves this. Even if Minebuilder were trademarked, they’re not trademarking Minecraft specifically, after all, and there’d be no need for a court case. Despite your desire to paint Notch with the same brush, he’s really not at all like a corporate entity.

There MAY be negative things to be said about Notch, but this is not one of them. Litigation happy is definitely not one of them.

What I’d like to know is this: Assuming the court sides with Mojang and we see Scrolls released as Scrolls, what kind of damage would a full trial bring down on Notch? Would a bad verdict mean royalties to Bethesda?

but then you have Scrolls coming to market. Basically, I want to know if it’s it possible for Bethesda to argue that “the damage is done” and demand reparations, or if they’d be safe from the consequence.

Since it haven’t been released I don’t think they can argue that any damage has been done.

If Mojang loose the game they release won’t be called “Scrolls” anymore (seriously Mojang, if you lose this, call it “Rolls of Paper”), so only those of us who have actually followed the development and the legal battle will know it had been called “Scrolls” – and I think Mojang can argue that we know that “Scrolls” isn’t associated with “The Elder Scrolls”.

I am inclined to ask why a light-hearted public persona on this is a bad thing? Let’s face it, it is not a serious issue. It is a really really big company and a medium sized company having a slightly silly argument about the name of a game.

And the stakes are really very low. If Mojang win, then the game is called Scrolls and basically, no harm is done. If Bethesda win, the game is called something else and very little harm is done.

There are serious issues, and there’s this. If you’re going to be silly, it might as well be over this.

And the stakes are really very low. If Mojang win, then the game is called Scrolls and basically, no harm is done. If Bethesda win, the game is called something else and very little harm is done.

What you describe are results. The actual stakes are massive, particularly for Bethesda – They have a massive game series that brings in a huge amount of money & ships many, many copies.
If Mojang win this suit, they *could* happily ask/demand Bethesda to pay a sum for each copy of any future Elder Scrolls game sold. Alternatively, they could require some sort of license agreement that could also extract a large sum of money for use of the term ‘Scrolls’. Bethesda’s only other option to avoid paying would be to ditch ‘The Elder Scrolls’ from the title, possibly harming the brand irreparably.
In addition to this, you have the reach of the trademark claim to consider. Are Mojang ever likely to release a TV series for Scrolls? It sounds to me more like squatting with intent to extract further money should companies infringe on it in the future.

Of course, this is all hypothetical and possibly benign, with no intent of Mojang to abuse the trademark. But if they win, it does set a dangerous precedent and could escalate to the same level as the stupid mobile patent suits going around.

I would be very suprised if this goes to court. Mojang would have to be so utterly convinced that naming their game Scrolls would be the make-or-break of the game’s success that it was worth devoting time, energy and obsence amounts of money into battling it. I can only believe that Notch is being so “playful” because he’s so certain it won’t come to that. I have been invovled in a similar situation before, but things were much more clearly in the favor of the “complainant”. There was still no universe where it was a good idea to pursue a legal case.

As others have said, it makes a pretty big difference whether this is over trademark dispute, or just use.

it will go to court because bethesda would be stupid not to take it there.. they dont defend it, then they lose it… not defending sets a precident for some one else to say “see? look here? they didnt even bother to take their trademark seriously!”

Notch getting a trademark on “scrolls” wouldn’t let him do anything to “the elder scrolls”. Note how they are different names.

Bethesda not “defending” their trademark of “The elder scrolls” by stopping a trademark of “scrolls” wouldn’t have any effect on their trademark. Note how they are different names.

Notch trademarking “elder scrolls” might cause problems. Bethesda not stopping people using “the elder scrolls” might cause problems.
But even in those cases, it’d be highly unlikely. Bethesda would have prior claim, and Bethesda would only lose their trademark in very very extreme cases, such as Hoover or Band-Aid… and even then they dodn’t lose their trademark, just the ability to stop people using it in general use.

@Nesetalis Sorry, I shouldn’t have said “court”, I meant “trial”. They’ve already gone to court, obviously. They don’t have to go through a full trial to protect their mark. The case is only at the point where the Swedish court is determining whether Bethesda should be allowed to proceed. If they are, it’s quite likely that Bethesda will try and give another C&D or settlement option before going forward, because a protacted affair would be undesirable for both sides.

The only explanation I have for why Notch is being so flippant is that he’s convinced it won’t be allowed to go to trial.

@optimaximal – I hear what you are saying, and I am no expert at all. But is what you are saying quite right? First, if Bethesda lost the right to use Elder Scrolls it would hardly ‘irreparably damage their brand’, given ‘The Elder Scrolls’ is a subordinate mark to the name of the games, though I accept it would be a problem. It’s hardly ‘Final Fantasy’, though?

But also, there seems no chance of that happening, or them having to pay Mojang for use as you suggest they might, given that Mojang seem to be fighting for right to use, not trademark. Although I suppose Mojang could be lying.

Also, given this is hardly the first legal fight of its kind, what new precedent does it set that would make it likely that we would see more aggressive IP battles in future than we have now?

This just seems like a more “professional” do-over of the whole Edge nonsense, but this time one side is a slightly egotistical successful company, and the other is throwing a lot of silly suggestions.

I’m just going to go with the basic fact that very rarely do people actually talk about “the elder scrolls”, instead of talking about Morrowind/Oblivion/Skyrim by their individual names.

The judges aren’t stupid, they knew that the guy had not actually released a hugely successful game called Edge in the months before Mirrors Edge. They just couldn’t come out and openly say it until his “evidence” had been rubbished.

I don’t quite know what you mean by that, but from my point of view, saying the cases are similar is akin to saying Bethesda are inventing evidence and demanding huge royalties from Mojang – which could not be further from the truth. The only similarity is that they both use similar laws, after that the cases are massively divergent.

You understand that “Edge vs Mirror’s Edge” and “Scrolls vs the Elder Scrolls” are similar in that one is a single commonly used word, and the other is a phrase featuring that word? right?

That’s all I’m saying.

They’re both prominent cases in the industry that focus on a simple comparison, not that one justifies the outcome of the other. I’m not making any comment about how Notch is Tim Langdell, or Notch is EA, or if anybody is fabricating evidence, or anything deeper.

If Bethsoft win, they won’t have control over the word “scrolls”, mearly have a legal predicent to make sure people make distinctive names for their games. Mojang will probably have to change the name or expand it to make it more distinct.

If Mojang win, they’ll be able to sue anyone who uses the word “scrolls” in a name, including Bethsoft for using “The Elder Scrolls”.

We realized we should apply for the trademark “Minecraft” to protect our brand. When doing so, we also sent in an application for “Scrolls”. When Bethesda contacted us, we offered both to change the name to “Scrolls: ” and to give up the trademark.

They refused on both counts.

Whatever reason they have for suing us, it’s not a fear of us having a trademark on the word “Scrolls”, as we’ve offered to give that up.

No, they would have effective control of the word “scrolls” as used in names of video games.
If Mojang can’t name their game “Scrolls”, then other people can’t either, and you bet that other names with scrolls are prohibited as well, since “The Elder Scrolls: Prefix” and “Scrolls” are quite a bit apart also, then it’s a small step to “Scrollcraft”, “Scrolls of destiny”, “Rim of the Sky: Scrolls of the elder Dragons”, “Scrollmania”, “Scrolling for fun and profit” and “Scrolls of Rage”.

I wonder, how do the trademark owners of Primal Rage and Streets of Rage will feel about this…
Not to mention Scrolling Walls.

you can name your game whatever you want, as long as it doesn’t infringe on some one else’s trademark.. NO ONE owns “scrolls” but if some one did, it would invalidate “the elder scrolls” and any other trademark with scrolls in it.

bethesda doesn’t care what notch names his game, only that he trademarked it, and its smart of them to take this to court to prove their trademark, proofing them against future battles.

I’m past ascribing any worth to anything Notch ot his legal team say, they seem pretty happy to distort the facts, knowing that plenty of people won’t check up on them because they’re the “little guy” and obviously thus the good guys, see the interview above for eliding and evading the facts of the matter in such a way as to make Betsoft look like Evilcorp.

RAGE, id, id Software, id Tech, and related logos are registered trademarks or trademarks of id Software LLC in the U.S. and/or other countries.

Zenimax owns id Software.
Why was Zenimax not sued by the owners of the trademark of Primal Rage and/or Streets of Rage and/or Rage Racer? Do these trademark owners have now lost their trademarks?
Same goes for Oblivion named games (even though they’re mostly crappy).

I’m not too familiar with trademark law (especially in the US or Sweden), but wouldn’t the fact that Bethesda had published an Elder Scrolls game (and apparantly trademarked it) before Notch had ever uttered the name “Scolls” not be a valid defense if he were to bring a trademark infringement against Bethesda?

They way I see it, Bethesda are basiclly calling us (the buyers) morons, claiming that we won’t know which game came from what company.
Although the reality may be, that they are forced to sue to protect their IP. It sound like the plot of a poor movie, where they only speak legalese – it’s just as absurd as ‘The Trial’.

Taking a step back, however, it’s… ‘wonderous’, the cleft between corporate world and ‘daily life world’ that sometimes becomes apparent.

I hope whatever museum has the dead sea ‘scrolls’ will sue the shit out of Bethesda – just to make a point :P

If I am not mistaken (which I may be), Mojang was applying for a fairly broad trademark referring not just to video games, but products of several other types. By contrast, Zenimax holds a relatively specific trademark on The Elder Scrolls, referring only to video games. Even if Zenimax’s trademark were even remotely close to the Dead Sea scrolls in terms of it’s usage, there is no way that I can think of in which a museum housing said documents would have any sort of grounds for suit. That’s because they are historical documents, not products or services. There is no “trade” to be marked.

This is not really an issue, as your comment was clearly intended to be a humorous one. I expound simply because, while I am not a lawyer, I have some simple hope that I might be able to help explain some of the basic concepts of trademarks to some of the folks discussing the issue in light of this lawsuit.

I also like listening to the sound of myself typing, and the thought of being an Important Man on the Internet, so there’s that, too.

tl;dr: I over-interpret a statement which was intended to be humorous.

I don’t see it that way. I don’t see it as a fact that Bethesda are acting like dicks.

I see it as Mojang acting like a dick, using this for publicity, trying to goad and taunt Bethesda. There’s this with ‘Scrolls’, planning to release Minecraft on 11.11.11 and marketing it against TES IV, the Quake challenge, the Dragon thing (though that might not be directed at Beth). Bethesda had no problem with him calling the game Scrolls… I even think Notch sat down with someone from Beth 8 or 9 months ago, or longer, and they discussed the game. It wasn’t until Mojang tried to TRADEMARK the name Scrolls that Beth had to step in, because a TRADEMARK of Scrolls, that they don’t defend, could in future, call their own Trademark of The Elder Scrolls into question.

mike2r, the problem here is you’re taking notch’s word on everything, he doesn’t state when he offered to change the name, was it before or after he damaged Bethesda’s name by complaining to his army of angry 12 year olds? Was it before or after he tried to publicly humiliate them by challenging them to a game of Quake?

if some nobhead was trying to trademark a single word that comprised the title of one of my big games that is coming out the same November, and then when confronted about it brushed it aside and started acting like a five year old I wouldn’t be lenient either.

What would stop Mojang, after trademarking Scrolls pursuing Bethesda at a future date for Elder Scrolls 6?

I realise that (that I’m only giving the Notch POV). But given he made that statement publicly on his blog, if Bethesda really only want Mojang to drop the trademark claim, why haven’t they simply accepted the offer?

They aren’t trying to keep Mojang from creating a trademark. They are defending theirs. In the beginning they were nice about it, but Notch abused their trust and tried to outmaneuver them legally. When they challenged that, he tried to outmaneuver them in the public eye. Everything was friendly until Notch started being an ass and then crying about the fight that he started.

It’s an interview with Mojang’s lawyer, of course it’s disingenuous. Clearly RPS has decided they have a horse in this race.

It’s a shame, too. I’d really have been interested in an interview with an intellectual property lawyer not directly associated with the case, who could actually evaluate both sides on their actual merits.

It’s important to remember that Bethesdas hand was forced, the patents and trademarks office rejeced mojangs trademark application for scrolls because it was too similar to the existing trademark the edler scrolls & not because (as they should have) it was a phrasse already in common usage, this means the p&tm office believe mojang are infringing bethesdas trademark by using the word scrolls and have forced bethesda to persue legal action or risk loosing thier trademark – i’m sure bethesda would prefer the judge rule in mojangs favor, if he doesn’t bethesda would have to pursue every use of scrolls in a game as trademark infringement to keep thier own trademark.

As far as I know from the joystiq or kotaku article , this is just the US Patent and Trade Office. All it will take is Bethesda suing them in the US to force them to change the name here. So either way this idiot has to change the name in at least one country.

Hello, this is my first post here. I always enjoy reading the blog but couldn’t resist jumping in on this since I am a specialist trade mark and brand protection lawyer.

I am not involved for either party in this matter (although we do act for several other major games companies). However, I feel I should weigh in on Bethesda’s side on this one.

The Elder Scrolls franchise is among the most valuable IP Bethesda owns — in fact it is not impossible that the trade mark THE ELDER SCROLLS could be their most valuable single asset. So there is a strong imperative to protect its value. This is particularly the case since the subtitle names (Morrowind, Oblivion etc) are only used for individual iterations of the game and so do not have the same longevity — after all, how many people now remember Daggerfall or Icewind Dale? (in fact, I’m not even 100% sure if those were Elder Scrolls). By contrast, the Elder Scrolls name goes on and on and is the main ongoing accumulator of brand value.

With a brand like this there is, however, a real risk that its value gets gradually eroded if similar sorts of names become successful (we call it dilution in the IP field). So Bethesda naturally need to take action to try and keep the name as distinctive and unique as possible within the gaming field. Part of this means trying to ensure that there is not a proliferation of other trade marks which share major elements of the mark — for example, a combat game called ‘Duty’ would almost certainly get a similar response from Activision.

This is a legitimate use of trade mark law which (in the EU at least) is aimed at protecting, among other things, the value of established brands (other fundamental concerns of TM law are to do with facilitating consumer choice and fair competition between businesses).

It is also worth noting that Bethesda have not (as far as I know) ever taken action against cases where games have used the word ‘scrolls’ as a simple description of an in game item (after all, loads of fantasy games have scrolls in them). However, this is not how Mojang are using the mark — they are using the word ‘scrolls’ as the name and primary trade mark for a game, presumably hoping that the game takes off and that consumers come to associate ‘Scrolls’ as referring to their game.

In this context, I think it is very legitimate for Bethesda to try and take action. In particular, Bethesda have to assume that Mojang’s game will be a rip-roaring success — if this does happen, then when people hear ‘Scrolls’ they will think Mojang and Bethesda will have a harder job differentiating their very valuable Elder Scrolls name.

For what its worth (and contrary to Alex Chapman’s assertion), personally I would not have advised Mojang that Scrolls was a ‘safe’ name. If I had been doing the clearance for Mojang before going public with the name I would have certainly flagged up the Bethesda risk and advised them to that there was a fair chance a dispute like this could arise.

In summary, (and sorry for the long post) I am not making any judgment one way or the other on who might win this one. However, from the perspective of someone in this field, I do think that Bethesda are acting perfectly reasonably in trying to protect their legitimate interests.

“With a brand like this there is, however, a real risk that its value gets gradually eroded if similar sorts of names become successful (we call it dilution in the IP field).”

Speaking purely from a consumer point of view: The only way Bethesda can harm and erode the good name of The Elder Scrolls, is if they make poor quality games. So far that has not been an issue, but to me all this feels unnecessary. If Bethesda has a strong product for us consumers, then their brand will remain strong. Consequently, if they fail to provide good games, then obviously The Elder Scrolls’ value as a brand will erode.

@Hanban it’s really got nothing to do with customer confusion or quality. Trademarks are required by their very nature to be defended, else the office that grants them will simply (and you could say rightly) assume that the holder has no interest in holding them any more.

Heck, people slate Games Workshop for their aggressive trademark defense and lawsuits , but their entire business is their trademarks and IP. If they lose that, they’re nothing but a bunch of talented sculptors and some useless moulds.

Trademarking common words is more common though. For instance (IIRC) Formula One Management wanted to trademark (or copyright) Grand Prix, they ran into issues with the IAAF.

Or another example, the wrestler Sting holds the rights to the word Sting in the US, anyone who wants to use it (most prominently Mr Summer) has to pay $1.

Where is the line drawn though? Could a company, in theory, act like Langdell again? Let’s say they (extreme example) trademark ‘food’, and then go on a lawsuit rampage against all the farms, supermarkets, etc, would they have a case, or is there a clause about words being generic enough that they are protected?

There is a highly aggressive German company called Medion who have a trade mark LIFE. They have enforced this against numerous others who have wanted to use LIFE in the name of competing products in Germany, including, most famously, successfully preventing use the name THOMPSON LIFE (I think it was all to do with TVs and similar, but can’t remember of the top of my head).

If you are using a trade mark in order to indicate the trade origin of products (e.g. the title of a video game franchise), and have registered it for this purpose, the you can in principle prevent others from using similar words in order to indicate the trade origin of similar products. Providing consumers can perceive your mark as indicating the trade origin of your products (so not if, for example, it just describes your product), you should in principle be able to enforce it.

I can’t believe some people actually defend Bethesda on this case or say they are forced to do it.

It’s a matter of having a monopoly over common word, much The Creative Assembly and Sega going to court against anyone using the word “war” as a part of video game name, because it can be mixed with “Total War: Shogun 2″, or Namco fighting over the word “soul” because other games could be mixed with “Soul Calibur”.

This is stupid and if they actually win the case, I lose all hope in every justice system in the world. Scandinavian countries are supposed to have rather good justice systems.

It’s disgusting how Zenimax and Bethesda are trying to defend themselves, when in reality they have all the power to drop the case and use their title like everyone else in the game industry. It’s not like the company would go bankrupt from that.

Sega would not be right to challenge someone calling a game ‘War’. However if someone had tried to trademark the word ‘War’ for a videogame title, they would have to do something about it, because otherwise they could actually risk losing the ‘Total War’ trademark, or at least being sued for it by the person who now effectively owned the word ‘War’ in a videogame context.

wait wait wait… you must be very confused.. if they don’t defend it, their trademark loses ground. If notch won, it would pretty much invalidate “the elder scrolls” as notch could then turn around and say “the elder scrolls infringes on my “Scrolls” trademark.” and bethesda would be forced to pay, or change the name, which would be a nightmare for any company big or small.
Losing the trademark to one’s IP is one of the worst things you can do to a company and notch is happily throwing shit in bethesda’s eye.

Hey wait a moment, have you ever noticed that long bar on the right side of this window? It’s called.. the SCROLL bar! Time for Bethesda lawyers to move their lazy ass, everyone is using their trademark in software every day

I think it’s not “easy” to just change the name… basically mojang has put some effort into promoting their product as “Scrolls”. It’s got name-recognition, a variety of news coverage from well-known websites, etc.

I doubt much money has gone into promoting it, but it would cause a bit of confusion if Mojang had to basically run around the block getting everyone to refer to it by the new name, etc.

They’ve not spent much money of getting that brand recognition, but they have kicked off an awesome high profile legal wrangle where lots of people who haven’t bothered to check the facts see them as the ‘little guy’ being bullied by the ‘big evil corporation’, which is worth an meeelion moneys in marketing terms.

Offering to change the name from “Scrolls” to “Scrolls: the Scrollening” is not offering to change the name; in fact, it is offering to keep the main name (“Scrolls”) exactly the same, and in fact inferring that Scrolls become a franchise, which makes it more infringing and not less. Notch is joking.

That is how people commonly talk about them, yes. That’s immaterial to brand recognition, though. If, one year from now, you see an ad that says, “Elder Scrolls VII. Coming Soon,” you will still know exactly what that is with no references to past games, and so will everyone else. That is the value of the name; when the next game comes out, Oblivion and Skyrim are in the past, but Elder Scrolls will still be current.

And please remember that Russ Pitt’s was the editor of The Escapist, an online magazine that for some reason was utterly convinced that Tim Langdell had the legal right to harass people in the way he did and in these articles, Russ continues to conflate the trademarking of a single word in the context of a trademark application with the actions of Tim Langdell.

With all due respect, read these articles but don’t take them as gospel because really, they’re not.

Now i remember reading this on daily tech stating that the reason Bethesda is doing this is because of the over reaching trademark claim on the part of Mojang. Its not seeking just the game but TV and t-shits etc pretty much everything that the word could be used on which could possibly create issues with bethesda.

“One of the things that concerns gamers in this case is that most of them are familiar with scrolls being so commonplace in fantasy games. … They are a core element of the game and so it seems wrong that someone should be able to assert a monopoly over the word.”

Ahh, isn’t that exactly what Mojang tried to do initially with their trademark application?

Like I said, this interview is really disingenuous, and I’m disapoint with RPS, they had managed to be a bit more balanced on this issue before, but the intro to this interview tells the same untrue version of events that the interviewee is pushing.

It sure is, and Alex Chapman’s comment is pretty disingenuous in this regard.

There is a difference between when a word is used simply as an ordinary descriptor (for example to refer to the scroll bar, or to refer to the scrolls used in any number of fantasy games) and when it is used as a trade mark.

When you use a word as a trade mark what you are doing is saying — “this word indicates my product; when you see a product with this word on it, it means that it comes from me”. Mojang are using Scrolls in this second sense and it is this type of use which Bethesda are challenging, they are not (as far as I know) trying to eradicate every mention of the word scrolls in ordinary discourse.

If Mojang get their Scrolls trade mark registration (and if their game is successful enough to spend money enforcing the brand), I can guarantee you they will go running around stopping other people from using ‘Scrolls’ in the titles of computer games — and for very good reason because they will need to ensure that it remains distinctive as the title of their game. They probably won’t be able to do this to Bethesda since Bethesda were there first, but they will do it to the next Indie developer who develops a game with Scrolls as a prominent part of the name.

I find the case vaguely interesting, but I don’t really care who wins. I just hope both sides are still in a position to publish games after it’s all said and done. And I’m pretty sure they will be; money will probably change hands, some game names might be changed, and the worst excesses of internet fandom will still continue to do their utmost to make everyone else even remotely associated with them look bad. And life will go on.

I definitely think that RPS should keep reporting on it all, though, and I don’t care one bit that they’re not instantly balancing out anything that seems sympathetic to Mojang with something from Bethesda (though I’d love to see a similar interview with someone from their legal team). This is as much an opinion/advocacy site as it is an objective report-on-the-facts site, and I don’t see any reason for it to be anything else.

I’m just wondering if Bethesda is even aware that NO ONE refers to Morrowind as “The Elder Scroll III: Morrowind” or Oblivion as “The Elder Scrolls IV: Oblivion”.

I’m sure as hell won’t be buying “The Elder Scroll V: Skyrim” – I’ll be buying Skyrim and I’ll use that term to talk about it.
Actually I’m really considering NOT to buy Skyrim at all if Bethesda follows through with this lawsuit.

I’m just wondering how lowfyr is aware of how EVERYONE refers to the series… because I’ve been calling them TES games, and the Elder Scrolls x, y or z for many years. The mod making environment is called The Elder Scrolls Construction set (TESCs), when I’m referring to the series it’s “The Elder Scrolls” (rather than “Arena, Daggerfall, Morrowind, Oblivion and Skyrim”), sometimes when referring to specific games it’ll be TES IV or TES III as it’s shorter than the subtitle.

This whole thing is a publicity stunt by Notch. Clearly he does not believe that the game can stand on its own, or he would simply change the name and move on. There is no inherent value in the name Scrolls for him; the game isn’t even finished yet. He has no real reason to fight this and even less reason to be so public about it, aside from all the free press it is getting his game. Remember how quiet he was about Minecraft? You had to hear about that from players. That’s how he acts when he thinks his game is actually good.

Fact: Scrolls is a pretty lame name for a video game.
Fact: Notch and some of the designers at Bethesda are best buddies.
Fact: Scrolls is now getting far more attention from the legal proceedings than it gets from its own quality, because nobody cares about a fantasy card game.

Theory: Bethesda and Mojang pretend to have this dispute to garner attention for a game that wasn’t getting any.

We realized we should apply for the trademark “Minecraft” to protect our brand. When doing so, we also sent in an application for “Scrolls”. When Bethesda contacted us, we offered both to change the name to “Scrolls: ” and to give up the trademark.

They refused on both counts.

Whatever reason they have for suing us, it’s not a fear of us having a trademark on the word “Scrolls”, as we’ve offered to give that up.

You know, his offer, to change to scrolls: subtitle, sounds EVEN MORE like The Elder Scrolls: subtitle (morrowing/oblivion/skyrim) to a much more causal gamer
“bro, seen that new scrolls: whoopdedo”
“you mean skyrim 2? with elves and swords and shit”
“yeah brah, it’s the card game you pay a monthly fee AND buy virtual cards for!”
“That’s pretty lame”
“yeah, fuck buying from those guys”
Sure, you and I can tell the difference, but can they

so I wouldn’t recall lawyers until:
A) are informed of the FINAL TITLE they’ll settle with
B) withdraw the current trademark on their own

Notch merely said “I told them I’ll do it” not telling them he is doing that, please withdraw the lawsuit.

Gotta love it how trademark law is apparently so arcane that it birthed all of these wonderful legends mentioned in the comments here. I tried trucking through to point out individual “that makes absolutely no sense” -parts but I just can’t. Most seems to have decided which side is wrong simply by which side they already preferred more and I feel my sanity slipping by reading them.

A few things though:

Trademarking a single commonly used word is normal. Just check what words are trademarked some day.
Talking of normal, from what I’ve understood there’s nothing abnormal about this. A company sues another and both claim to be on the right. Sound pretty run of the mill. What makes it sad is that so many blindly trust one side and claim the other is the devil.
No, blaming Notch for this mess of news isn’t really fair. He’s been posting openly about quite a bit of stuff from what I can tell. Why would this time be any different? If you have to put blame on someone, put it on all the news sites that started posting about this.
It’s also not his, or RPS’s or any other news site’s, fault that large companies like Bethesda/Zenimax rarely make public comments about lawsuits and when they do it’s with a delay due the internal red tape.

Unless trademark law is completely different in other countries than mine it makes no sense for a holder of a new trademark to be able to sue and win a legal battle against a holder of an older trademark that has been in constant use.
Surely if Mojang wins this it means they can’t sue and win against Bethesda because the ruling would be that having the two trademarks (“Scrolls” and “The Elder Scrolls”) isn’t causing consumer confusion and therefore both can co-exist in the same market.
So unless Bethesda lose “The Elder Scrolls” trademark if “Scrolls” gets trademarked they’re not very likely to be in legal trouble in the future because of Notch. And I don’t see them losing it from this, but my opinion is irrelevant.

TL;DR – Just ignore the whole shebang until there’s a legal ruling. Nothing groundbreaking will happen with either of them winning.

I’m curious as to where people got the idea that you have to *SUE* someone in order to be considered “defending” your trademark.

Defending your trademark means that they must combat unlicensed use of that trademark. Unless “Scrolls” is competing with “The Elder Scrolls,” which it clearly is not, there’s no reason to be involved in a suit. If Mojang was making an open-world RPG and calling it “Scrolls,” Bethesda might have a point.

But they’re not. They’re making what is, essentially, a CCG. This is the equivalent of Wizards of the Coast suing Realmforge+Kalypso and saying people might confuse “Dungeons” with “Dungeons & Dragons.”

“Shocking lack of balance if we don’t hear Bethesda’s side of this argument”

Key points to consider:
1) RPS are fairly serious games journalists and I would be surprised if they haven’t asked Bethesda to comment.
2) Bethesda, being an uber corporate entity in the gaming world, are far less likely to comment than Notch.
3) Are you concerned that this portrayal is painting Bethesda in an unfair light? Do you really believe that people are going to confuse a game named “Scrolls” with a game sometimes named “The Elder Scrolls”? Or do you, like the majority of laygamespeople that hear about this issue, think that Bethesda’s legal team are engaging in corporate douchebaggery?

Why does it seem like I’m the only one who thinks this lawsuit is so completely ridiculous that it highlights the stupidity and irrationality of Trademark law?

I mean, it’s not ‘The Old Scroll’, or ‘Eldest Scrolls’ or whatever. It’s one word, a word that’s so common in fantasy games (and this isn’t even an RPG Mojang is making)…

Everyone just talks about getting both sides of the story, blah blah blah…

My first (and continuing) impression of this whole ordeal is that Bethesda saw that a very small company with a large amount of money did something that they could pounce on in an effort to drain some of their capital for themselves. All I can think of is ‘Corporate Predator’.

“One of the things that concerns gamers in this case is that most of them are familiar with scrolls being so commonplace in fantasy games. They are to fantasy games what guns are to FPS games or cars are to driving games. They are a core element of the game and so it seems wrong that someone should be able to assert a monopoly over the word.”

If Mojang wins, will they own and assert a trademark on the name “Scrolls”?

The intersection of gamers and intellectual property law is so tragic. The number of comments here that are not totally wrong is frightfully small.

I would suggest that comment threads — especially debates — in this community on the subject of trademark are best skipped. Imagine your great grandmother trying to play Starcraft 2. It’s just not going to work.

That is not to say don’t talk about this stuff, but it is to say: educate yourself before you speak.

But do keep in mind Mojang is trying to slap a trademark on the word “Scrolls.” Not just name his game that, but trademark it. Has anyone stopped and thought about what future problems that could open?